topic 4a: retrieving and utilizing external examination
TRANSCRIPT
Topic 4A:
Retrieving and utilizing external examination results
Lutz MailänderHead, Patent Information SectionGlobal IP Infrastructure Sector
Harare10-12 July 2012
Agenda
OpportunitiesRequirementsTypes
of results
finalintermediary
Public resources
for
retrievalIssues
Opportunities
through
patent families
Utilisation
possible
if
same
invention
was/is
filed
in several
IPOsOFF:
Office of First Filing
OSFs:
Office(s) of Second Filing
Active worksharing: avoid
duplication
of work
by
active
organisation
of the
work
distribution; e.g
OFF treats
applications
with
priority
and OSF
wait
for
resultsSome
collaborations
have
started, e.g. Vancouver Group (AU, CA,
UK) Trilateral offices
(EPO,JP,USPTO)
„Passive worksharing“: Use
results
that
were
obtained
for
family members
at other
IPOs
Active
worksharing
trilateral offices
Utilisation requires that results produced by the Office of First Filing are available on-time at the Office of Second Filing
The EPO performs systematic prioritisation of first filings. Utilisation at the EPO requires that other offices also do the same:
JP-FIRST: JP Fast Information Release Strategy -
JPO launched in 2009 this pilot to prioritise certain first filings that are subsequently filed at the EPO and USPTOSHARE: Strategic Handling of Application for Rapid Examination. USPTO launched in 2010 a pilot with the EPO and JPO where this office prioritises first filings (FLASH -
First Look Application Sharing)
Passive worksharing
Utilization
of examination
results
obtained
by
other
IPOs
can
save resources
and improve
quality, e.g.
Other
IPOs
may
have
access
to other
information
resourcesIndividual
examiners
at other
IPO may
have
particular
expertise
in
a certain
fieldLearning
from/improving
other
search
strategies
Examination reports
may
include
valuable
arguments
Effective
strategy
for
small
IPOs
to cover
all technical
areas, instead
of outsourcing
of substantive
examination
(see
presentation
of topic
1)
Types of examination results
Intermediary or pre-grant resultsSearch reports (basic; enriched, e.g. with search strategies)Written opinions, examination reportsCommunications between applicant and examinerThird party observations
Final resultsGranted claimsRejections; withdrawls
following substantive reports
Post-grant resultsAdditional prior art from opposition/re-examinationAmended claimsCommunications between involved parties (3+)
Usable results
OFF: DE-A1 OFF: DE-A1
EP search reportEP search report
OSF: US-A1 OSF: US-A1 US search reportUS search report
OSF: JP-A1 OSF: JP-A1 JP search reportJP search report
OSF: EP-A1 OSF: EP-A1
OSF: AR OSF: AR
DE search reportDE search reportDE-B1
claims+search
report
DE-B1
claims+search
report
EP-B1
claims+search
report
EP-B1
claims+search
report
US-B1
claims+search
report
US-B1
claims+search
report
JP-B1
claims+search
report
JP-B1
claims+search
report
Issues with final results
Utilization of final resultsRequires identical claimsRequires cooperative lawyers/applicants that agree to use the claims granted abroadRequires the claims to be compatible with national law, e.g. exemptionsRequires confidence in the work of other IPOsImplies considerable delay because final results have to become available(See separate presentation on topic 8 for use of granted claims)
Patent prosecution highway PPH
JPO initiative to accelerate granting in case of grants at other IPOsIn case of grants: Option for applicants to obtain patent protection more efficiently and faster in the Office of Second Filing when the Office of First Filing has determined allowable / patentable subject-matter.(See separate presentation on topic 8 for use of granted claims)
Issues with intermediary results
Implies some but smaller delay than waiting for final resultsSearches are based on claims: the foreign search results may be incomplete/inappropriate if claims are differentRequires checking whether same prioritiesDifferent priorities and priority dates can lead to different claims or prior artUsually no problems if simple familyUsing results for members of extended family may be problematic
Planning of utilization
►Utilization
of examination
results
requires
knowledge
ofFamily
information, i.e. where
else
has an invention
been
filed
(Paris, PCT, technical
family)Examination practice
of other
IPOs, i.e. do they
have
deferred
examination
(e.g. DE), is
prior
art search mandatory
(e.g. EP, PCT) ?
Examination status, i.e. is
substantive
examination
under way (i.e. national phase
entry
for
PCT applications)
►Depending on national requirements, e.g. deadline for first action by examiner
Retrieval options
Active retrieval by examiner, i.e. research family information and research examination status and retrieve results from online resources
Request applicant to submit information; some legislations provide for a respective obligationArticle 124 EPC
(1) The European Patent Office may, in accordance with the Implementing Regulations, invite the applicant to provide information on prior art taken into consideration in national or regional patent proceedings and concerning an invention to which the European patent application relates.(2) If the applicant fails to reply …. deemed to be withdrawn.
Online resource
►Various (public) online databases provideFamily information (see topic 3)Examination statusPublished applications and granted patents with search reports, granted claimsSeveral IPOs also offer access to the examination file (file wrapper), e.g.
Examination reportsReplies from applicants
Selected online resourcesEuropean Patent Register (EP)
https://register.epo.org/espacenet/regviewerCommon Citation Document (Pilot)
http://www.trilateral.net/ccdPatentscope
http://www.wipo.int/patentscope/search/en/search.jsfPublic Pair (US)
http://portal.uspto.gov/external/portal/pairAIPN (JP)
http://aipn.ipdl.inpit.go.jp/K-PION (KR)
http://kposd.kipo.go.kr:8088/up/kpion/DPMAregister
(DE)
http://register.dpma.de/DPMAregister/Uebersicht?lang=en
Online resourcesEuropean Patent Register (EP)
EP applications: enriched SR, ER, examination status, file wrapper)Common Citation Document (Pilot)
SRs
for EP, JP, US, WO,…..Patentscope
WO applications: enriched SR, ER, file wrapperPublic Pair (US)
US applications: file wrapper with SR, ER, examination statusAIPN (JP)
See topic 4B presented by JPOK-PION (KR)
See topic 4B presented by JPODPMAregister
(DE)
DE applications: SR, examination status
USPTO -
PAIRPatent Application Information Retrieval (PAIR)
USPTO -
PAIR
"Application Data" contains Bibliographic Data of application
Next slide
citationsfamily
USPTO -
PAIR"Image File Wrapper" contains search and examination reports
German Patent Office DPMAregisterAccess to examination status and search reports of applications processed by German patent office: no file wrapper yet
German Patent Office DPMAregister
Espacenet
PDF-documents of publications
Link to European Patent Register
European Patent Register
Contains procedural information on European patent applications once published (examination status, validity)Not to be confused with similar looking Espacenet
interface; similar search options:Number Search: Publication and Application Number, Filing DateAdvanced Search: Keywords, Applicant/Inventor, Representative, Opponent, Priority Dates and Numbers, IPC classes
European Patent Register
Next
slide
EPR -
All documents
Patentscope: PCT file inspection
Covers only international phase
Common Citation Document (CCD)CCD offers consolidated access to family information and the related citation data from JPO, USPTO, EPO, PCT, and several other jurisdictions for each respective family member.
CCD builds on the EPO's
family system and has been developed and is hosted by the EPO.
CCD permits viewing of cited patent documents
No examination reports included
Various display options
http://www.trilateral.net/ccd
Common Citation Document (CCD)
CCD –
citations only view
Shows for each citation in which search report it is cited, taking into
account equivalents
Estimated number of simple families
Actual number of simple families
“+”
separator between simple families
REMINDER: National sovereignty
Paris Convention:
No obligation to use results of others, or to follow their conclusions
IPO has obligation to observe national legislationIPO has responsibility/liablity
for quality patents